To Patent Prosecutors and Litigators.. Forum

[skri65]

If you were to do it all over again (and were eligible to do so), would you have chosen patent prosecution or litigation? If so, why?

Side questions: Do any firms allow you to get your feet wet with both prosecution and litigation? Is patent prosecution a dying breed at the larger general practice firms? How much does science degree help in the job search for a patent litigation job? (as in, do you still need to have the grades, or can a science degree help boost an applicant over another applicant who may have better grades?)

[09042014]

Is patent prosecution a dying breed at the larger general practice firms?

yes

[dood]

Is patent prosecution a dying breed at the larger general practice firms?
do you still need to have the grades?

yes and yes.

[Abbie Doobie]

If you were to do it all over again (and were eligible to do so), would you have chosen patent prosecution or litigation? If so, why?

Still would pick prosecution. The work is boring, but so am I.

Do any firms allow you to get your feet wet with both prosecution and litigation?

Some do. But the ones that do will likely force you to go full-time litigation after a few years because your billing rate will be too high to do prosecution work.

Is patent prosecution a dying breed at the larger general practice firms?

Yeah, it's "fixed fee" work and budgets keep getting smaller. GP firms generally have higher billing rates than IP boutiques, so it makes sense for the work to go to smaller firms. There really isn't any economies of scale with prosecution.

How much does science degree help in the job search for a patent litigation job?

Some, but grades are king.

(as in, do you still need to have the grades, or can a science degree help boost an applicant over another applicant who may have better grades?)

No, you still need the grades.

[skri65]

Thanks. I'm within top 15% at BU/BC/FORDHAM with a patent bar eligible computer science degree. Am I in the running for top IP Lit firms or will my best bet for near-market employment be patent pros?

Please don't quote.

[84651846190]

I don't know about "top" IP lit firms, but those stats should certainly put you in the running for an IP lit job at some firm.

[Anonymous User]

Thinking about trying to pitch myself as a pros and/or licensing guy at PLIP. Is this wise/possible? Have molbio PhD if that helps.

[Anonymous User]

Question only marginally related to this thread. I am starting in the fall in a V30 firm that does primarily patent litigation. Grades are pretty good but not tippy top of class, no LR. No science background so I recognize how lucky/rare/whatever it is for me to be able to do patent lit. I loved this stuff as an SA (I've always been interested in EE, CS stuff which is what my firm does a lot of and I pick things up pretty fast) and can't wait to get back to it in the fall (people are great, culture is good, etc.).

My problem is this, my job is in CA and there's a chance I'll need to be back in NYC for personal reasons in 1-1.5 years. So my question is this, am I totally screwed for lateraling after 1-1.5 years at my firm? Especially if I'd like to stay at least somewhat close to patent litigation? Would my best bet to see if my firm can transfer me to the NYC office after a year?

[84651846190]

Thinking about trying to pitch myself as a pros and/or licensing guy at PLIP. Is this wise/possible? Have molbio PhD if that helps.

pros shops love PhDs, as long as it's a hard science (like molbio)

[patentlaworbust]

Question only marginally related to this thread. I am starting in the fall in a V30 firm that does primarily patent litigation. Grades are pretty good but not tippy top of class, no LR. No science background so I recognize how lucky/rare/whatever it is for me to be able to do patent lit. I loved this stuff as an SA (I've always been interested in EE, CS stuff which is what my firm does a lot of and I pick things up pretty fast) and can't wait to get back to it in the fall (people are great, culture is good, etc.).

My problem is this, my job is in CA and there's a chance I'll need to be back in NYC for personal reasons in 1-1.5 years. So my question is this, am I totally screwed for lateraling after 1-1.5 years at my firm? Especially if I'd like to stay at least somewhat close to patent litigation? Would my best bet to see if my firm can transfer me to the NYC office after a year?

Here's my limited experience. I have about 1 year experience working at a v30 doing about 80% pros 20% lit. I have a mechanical/bioengineering background.

Firms can be very touchy about transferring to other offices. If there isn't a lot of cross-office work (i.e., you do almost all your work for partners in your office) there may not be an internal incentive to move you, other than keeping you with the firm if you're a "rock star". If there is a lot of cross-office work, this may be doable and it may be no big deal to your firm. A newer associate at my office (does mostly patent lit) was recently able to transfer from our big east coast office to a smaller office in CA. He has a lot of family in CA and did a decent amount of work with partners in that office. Still, he had to bargain pretty hard to get the firm to agree, and he had to bargain even harder to get the firm to assist with some of the moving costs. The moral of this is that the mere existence of another office and your desire to move to that office's area still may not be enough to get you a transfer at all firms. It is very case-by-case.

Lateraling is a good consideration. You'll be happy to know that EE/CS (but especially EE) is extremely sought after in the lateral patent market. My firm recently brought in 3 laterals with backgrounds in EE (1 as counsel and 2 as associates). With an EE degree, you'll be very sought after as a lateral, even with only a year of experience under your belt. With my mechanical background I get recruiters calling my office phone every couple weeks. Some of my EE and CS colleagues get calls from them as often as once a week, in addition to emails and linkedin messages.

Besides just feasibility, there are other factors at play. You may decide that working at your firm wasn't as glorious as being a summer associate made it seem (hard to believe, right?) and lateraling may be your best move. Alternatively, you may love it and would make every effort to stay if they will allow you to transfer. Keep your mind open and don't be afraid to ask around about switching offices early after you have started.

Good luck.

[Anonymous User]

Do EE s have it better than the rest? Do they get paid more or are more likely to make partner or something?

[Abbie Doobie]

Do EE s have it better than the rest? Do they get paid more or are more likely to make partner or something?

Probably better in the job marked since there is more demand. Similarly, it's probably easier for them to stay busy at their firm since there is more work. But apart from that, I don't see any advantage re: pay and partner track.